Two scenarios occur most often when the question arises as to how to be sure you own the copyright rather than the employee or independent contractor who authored/created the particular work. The first situation arises when, as an employer, your employee creates a particular work for you. The second situation arises when you contract with a third party to create the work for you and whatever use you intend for that work. Both of these situations implicate what is known as the work made for hire doctrine under the United States Copyright Act.
If the work was prepared by an employee of the employer within the scope of that employee's employment, then the work is considered a work made for hire, and all rights are retained by the employer. These rights include not only the right of ownership, but the employer is also considered the author of the copyright. It is important to recognize that several factors will be considered when determining whether or not an individual is indeed an employee, and these considerations are consistent with the common laws of agency.
The more difficult situation arises when an individual contracts with a third party to create a particular work. In this situation, there are different options available to ensure that you, as the individual contracting with the third party, have rights in the work. In order to qualify as a work made for hire under the statute, the work must be specially ordered or commissioned by you, the work must come within one of the nine enumerated categories of works set forth in the Copyright Act, and there must be a written agreement in advance that notes the work is indeed a work made for hire (with those words used).
It is important to recognize that having an independent contractor merely execute a work for hire agreement may not be sufficient unless each of these factors is satisfied. For example, if the work does not fit within one of the nine enumerated categories of works, a work for hire agreement is essentially without legal effect. Finally, there is a down side to a work for hire agreement. In particular, the duration of ownership with a work for hire is 95 years from publication rather than the usual duration of life of the author plus 70 years.
Therefore, as an alternative, a copyright assignment agreement may be favorable. Such an agreement would assign rights and title to the work to you. That said, the original author maintains designation as author, but you become the owner of all other rights if the agreement is properly drafted. While the drafting of a copyright assignment agreement is specific to the particular situation, it is important that all moral rights to the work, including the right of attribution and the right of integrity, are severed so as to prevent the author requiring you to include his or her name among every distribution of the work. Like any other kind of contract, the agreement must also set forth all other terms including, but not limited to, consideration, any representations and warranties, and the critical dates and signatures.
Finally, in order to avail yourself of all benefits of a copyright registration with the Library of Congress, namely the U.S. Copyright Office, it is beneficial to file the work under the appropriate designation. Since the author of the work must be noted within a filing, it will be important to understand whether there was a work for hire agreement or an assignment agreement created to show which rights have indeed been transferred to you.
Ultimately, whether or not a particular work is indeed a work for hire, whether the copyright assignment agreement or a typical work for hire agreement is preferred, and the best way to proceed with registration depend on the specific facts of each situation. Therefore, it is important to think about these issues and address them early in order to ensure that you have copyright protection and are in a strong position to deal with any potential copyright infringement in the future.
Brian A. Hall is an attorney and partner of Traverse Legal, PLC, a law firm focused on complex litigation, intellectual property matters, internet law and trademark registration and prosecution. Speak with a copyright attorney today and learn more about the importance of understanding the intricacies of infringement of copyright and other copyright issues.
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